Ex Parte Guo et alDownload PDFPatent Trial and Appeal BoardMar 27, 201712347217 (P.T.A.B. Mar. 27, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/347,217 12/31/2008 Xiaoping Guo 0B-057000US/82410.0307 1707 55962 7590 Wiley Rein LLP Patent Administration 1776 K Street, NW Washington, DC 20006 03/29/2017 EXAMINER SCOTT, ANGELA C ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 03/29/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ptodocket @ wileyrein. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XIAOPING GUO, DAVID P. JOHNSON, and RICHARD E. STEHR1 Appeal 2016-003034 Application 12/347,217 Technology Center 1700 Before: BEVERLY A. FRANKLIN, DONNA M. PRAISS, and AVELYN M. ROSS, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL2 Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—39, 45, and 46. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the real party in interest as St. Jude Medical, Atrial Fibrillation Division, the assignee of the instant application. Appeal Br. 2. 2 In our Decision below, we refer to the Specification (“Spec.”) filed December 31, 2008, as amended January 29, 2010, the Final Office Action (“Final Act.”) mailed March 12, 2015, the Appeal Brief (“Appeal Br.”) filed August 11, 2015, the Examiner’s Answer (“Ans.”) mailed November 30, 2015, and the Reply Brief (“Reply Br.”) filed January 29, 2016. Appeal 2016-003034 Application 12/347,217 STATEMENT OF CASE The claims are directed to a biocompatible polycarbonate and radiopaque polymer composition for use in medical and surgical devices. Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A biocompatible polymer composition comprising: poly(bisphenol A carbonate) homopolymer present from about 61.7 to 90 wt%, a polyamide or a polyamide-based thermoplastic elastomer, and an inorganic radiopaque filler. Claims Appendix at Appeal Br. 14. REJECTIONS The Examiner made the following rejections: A. Claims 1—10, 14—28, 31, and 36—39 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chakravarti3 in view of Isozaki.4 Final Act. 2. B. Claims 11—13 and 32—35 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chakravarti, Isozaki, and further in view of Chou.5 Id. at 4. 3 Chakravarti et al., US 2007/0293626 Al, published December 20, 2007 (“Chakravarti”). 4 Toshio Isozaki, US 2002/0177648 Al, published November 28, 2002 (“Isozaki”). 5 Chou et al., US 2006/0142489 Al, published June 29, 2006 (“Chou”). 2 Appeal 2016-003034 Application 12/347,217 C. Claims 29 and 30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chakravarti, Isozaki, and further in view of Wang.6 Id. D. Claims 45 and 46 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chakravarti in view of Isozaki. Id. at 5. Appellants request reversal of Rejections A—D. Appeal Br. 7. Appellants present argument for claim 1 (Rejection A) and claim 45 (Rejection D), but, Appellants do not present argument for dependent claims 2—39 and 46 separate from what is argued for independent claims 1 and 45. Id. at 8—12. Therefore, we focus our discussion below on independent claims 1 (Rejection A) and 45 (Rejection D), which are dispositive of the issues on appeal. OPINION Rejection A — Obviousness (claims 1—10, 14—28, 31, and 36—39) The Examiner rejects claim 1 as obvious over Chakravarti and Isozaki. Final Act. 2. The Examiner finds that Chakravarti teaches a composition having a polycarbonate in the amount claimed, a polyamide resin, and a filler. Id. at 2—3. The Examiner acknowledges that Chakravarti does not teach Appellants’ preferred barium sulfate inorganic filler. Id. at 2. The Examiner additionally finds that Isozaki teaches a polycarbonate resin composition having an inorganic filler, e.g., barium sulfate. Id. The Examiner finds that both Chakravarti and Isozaki relate to the same field of endeavor “namely that of polycarbonate compositions containing fillers used 6 Wang et al., US 2003/0152728 Al, published August 14, 2003 (“Wang”). 3 Appeal 2016-003034 Application 12/347,217 for moldings and parts of electric and electronic appliances as well as automotive parts (|72 of Isozaki; |39 of Chakravarti et al.).” Id. The Examiner concludes that one skilled in the art would have had reason to include the barium sulfate filler of Isozaki in the composition of Chakravarti because “Isozaki teaches that this amount and type of filler is suitable for use in polycarbonate compositions useful for moldings for various housings and parts of electric and electronic appliances as well as automotive parts.” Id. Appellants present several arguments to oppose the Examiner’s rejection. Appeal Br. 9-11. Appellants begin by contending that Chakravarti does not teach “the specific composition of a biocompatible polymer composition comprising poly(bisphenol A carbonate) homopolymer present from about 61.7 to 90 wt% and a polyamide or a polyamide-based thermoplastic elastomer.” Id. at 9. Appellants fail to identify error in the Examiner’s rejection. As the Examiner finds (Final Act. 2—3; Ans. 4—5), Table 7, Example 35 of Chakravarti shows a composition having 75 parts by weight PC and 25 parts by weight GTR45. Table 1 of Chakravarti describes PC as a “PCP (para- cumyl phenol) capped polycarbonate (synthesized from polycarbonate Bisphenol A and phosgene,” which is a bisphenol A carbonate homopolymer, and GTR45 as a “[cjopolymer of hexamethylene diamine with isopthalic acid and terepthalic acid,” which is a polyamide. Chakravarti 1100, Table 1. Therefore, the record supports the Examiner’s findings (Ans. 6), the specific composition of a “biocompatible polymer composition comprising poly(bisphenol A carbonate) homopolymer present from about 61.7 to 90 wt% [and] and a polyamide or a polyamide-based thermoplastic elastomer” is taught by Chakravarti. Ans. 6. 4 Appeal 2016-003034 Application 12/347,217 Next, Appellants argue that the “polymer compositions disclosed by Chakravarti have extremely different mechanical properties than those currently claimed.” Appeal Br. 9. Appellants compare the compositions of the instant invention (Table 1) with Tables 2 and 3 of Chakravarti and offer the testimony of Dr. Xiaoping Guo (“Guo Decl.”) who concludes that “significantly higher tensile modulus of the Chakravarti compounds indicates that the materials disclosed in Chakravarti are significantly less flexible than those claimed.” Guo Decl. | 8. Appellants’ argument that the claimed polymer possesses different mechanical properties is not persuasive of error by the Examiner. First, claim 1 (unlike claim 45 discussed below) does not recite any particular mechanical properties. As unclaimed limitations, improved mechanical properties provide no basis to distinguish the instant claims from the prior art. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[Appellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). Second, the compositions identified by Appellants (Appeal Br. 9) as having a Young’s modulus that exceeds the claim limitations are not the same compositions as claimed or identified by the Examiner as meeting the claimed components. Compare Chakravarti Tables 2 and 3 with Table 7. As the Examiner explains, the “Appellant is comparing apples to oranges in this instance.” Ans. 6. Appellants then urge that Chakravarti does not teach the claimed inorganic radiopaque filler and that one of ordinary skill in the art would not have combined Chakravarti with the barium sulfate filler of Isozaki “because as the Examiner admits (Office action, p. 7.), the mechanical properties of Chakravarti would thereby be altered, and the alteration would render the 5 Appeal 2016-003034 Application 12/347,217 resulting compounds undesirable.” Appeal Br. 10. Appellants allege, “the Examiner’s proposed modification would thus render Chakravarti unsatisfactory for is intended purpose.” Id. Appellants do not persuade us of reversible error. We agree with the Examiner (Appeal Br. 6—7), that because the composition of Chakravarti does not include all the components of the claimed invention—specifically, the radiopaque filler—Chakravarti alone may possess different mechanical properties as compared to the claimed invention. But, and the Examiner does not suggest otherwise, that does not mean that the inclusion of a radiopaque filler will render Chakravarti unsatisfactory for its intended purpose. If a proposed modification would render the prior art being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Here however, Chakravarti contemplates using fillers within the disclosed compositions. Chakravarti | 57. Thus, the addition of a filler, known to be useful for similar compositions and purposes, like the barium sulfate of Isozaki, would be expected to produce a satisfactory, as opposed to unsatisfactory, result. Furthermore, Appellants provide no evidence to the contrary. Rather, Appellants rely upon attorney argument but, “[cjounsel’s argument cannot take the place of evidence lacking in the record.” Estee Lauder Inc. v. L ’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). Finally, Appellants assert that “[tjhere would be no motivation or suggestion to combine Isozaki with Chakravarti as no benefits would be expected to be achieved. In fact, the opposite would be true—one of ordinary skill in the art would expect further experimentation would be 6 Appeal 2016-003034 Application 12/347,217 necessary to achieve the desired properties.” Appeal Br. 11. Appellants contend that only through improper hindsight can the combination be made. Id. Appellants’ argument does not persuade us of error. The “[ejxpress suggestion to substitute one equivalent for another need not be present to render such substitution obvious.” In re Font, 675 F.2d 297, 301 (CCPA 1982); In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997) (“Because the applicants merely substituted one element known in the art for a known equivalent, this court affirms [the rejection for obviousness].”). Here, the Examiner aptly finds that both Chakravarti and Isozaki teach polycarbonate compositions, including fillers, which are useful for “moldings for various housings and parts of electric and electronic appliances as well as automotive parts.” Final Act. 3. While Chakravarti does not expressly identify a specific filler material to be used (Chakravarti 157), Isozaki teaches inorganic fillers, such as barium sulfate, may be used (Isozaki | 67) for similar compositions having a similar purpose. Thus, the Examiner properly relies on the teachings of Chakravarti and Isozaki to substitute a known element according to its established function to yield a predictable result. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Moreover, we find no evidence that the Examiner relies on impermissible hindsight reasoning as the Examiner’s articulated reasons for combining the teachings of Chakravarti and Isozaki are supported by the prior art disclosures. See, e.g., Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996). Moreover, Appellants do not identify any 7 Appeal 2016-003034 Application 12/347,217 knowledge relied upon by the Examiner that was gleaned only from the Appellants’ disclosure and was not within the level of skill in the art at the time of the invention. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Rejection D — Obviousness (claims 45 and 46) The Examiner rejects claim 45 as obvious over Chakravarti and Isozaki. Final Act. 5. Independent claim 45 is similar to independent claim 1, but additionally requires that “the biocompatible polymer composition has a Young’s modulus from about 125.7 to about 164.0 ksi.” Claims Appendix at Appeal Br. 18. The Examiner finds that because “the references teach all of the claimed ingredients and amounts, and a substantially similar process . . . . the claimed effects and physical properties, i.e., a Young’s modulus from about 125.7 to about 164.0, would implicitly be achieved by [the] resulting composition.” Final Act. 6. Appellants, in addition to the arguments presented for Rejection A above, argue that the Young’s modulus is not taught by Chakravarti and, in fact, “all of the examples disclosed by Chakravarti have a Young’s modulus about 2—3 times greater than that of the currently claimed invention.” Appeal Br. 12. Appellants do not convince us of reversible error by the Examiner. As explained above (supra p. 5), Appellants’ assertion that the examples in Tables 2 and 3 of Chakravarti have a Young’s modulus about 2—3 times greater than that of the currently claimed invention, is not an appropriate comparison because those examples do not teach the claimed bisphenol A carbonate, unlike Example 35 of Table 7, which the Examiner uses in making the rejection. Compare Chakravarti Tables 2 and 3 with Table 7. 8 Appeal 2016-003034 Application 12/347,217 Moreover, “[wjhere, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.” In re Best, 562 F.2d 1252, 1256 (CCPA 1977). Appellants have failed to show, through evidence or argument, that the polycarbonate and polyamide blend of Example 35 of Chakravarti, in combination with the barium sulfate filler of Isozaki, would not possess the claimed Young’s modulus. Thus, we find no error in the Examiner’s rejections. CONCLUSION The Examiner did not reversibly err in rejecting claims 1—10, 14—28, 31, and 36—39 under 35 U.S.C. § 103(a) as being unpatentable over Chakravarti in view of Isozaki. The Examiner did not reversibly err in rejecting claims 11—13 and 32— 35 under 35 U.S.C. § 103(a) as being unpatentable over Chakravarti, Isozaki, and further in view of Chou. The Examiner did not reversibly err in rejecting claims 29 and 30 under 35 U.S.C. § 103(a) as being unpatentable over Chakravarti, Isozaki, and further in view of Wang. The Examiner did not reversibly err in rejecting claims 45 and 46 under 35 U.S.C. § 103(a) as being unpatentable over Chakravarti in view of Isozaki. Id. at 5. 9 Appeal 2016-003034 Application 12/347,217 DECISION For the above reasons, the Examiner’s rejection of claims 1—39, 45, and 46 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 10 Copy with citationCopy as parenthetical citation